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From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Hormel sold canned luncheon meat sold under the trade mark SPAM. Antilles owned a figurative trade mark for the word SPAMBUSTER. After it unsuccessfully applied to the Trade Mark Registry for a declaration that the SPAMBUSTERS mark was invalid, Hormel went to court and sought (i) declarations that the mark had been registered in contravention of section 3(1)(b) or (c) of the Trade Marks Act 1994 or (ii) revocation of SPAMBUSTERS under section 46(1)(c) on the ground that it was descriptive, generic or devoid of distinctive character. Antilles counterclaimed, contending that (i) SPAM was registered in contravention of s 3(1)(d) of the Act since it was a term used in trade under section 47(1) or that (ii) it should be revoked under section 46(1)(c). Antilles also complained that Hormel's proceedings were oppressive and vexatious and that Hormel sought to ignore the adverse ruling made against it in the Registry proceedings.

Richard Arnold QC ruled both that Hormel was barred from attacking the validity of the defendant’s mark and that Antilles' counterclaim would be dismissed. In particular:

* A person who attacks the validity of a patent or registered design is obliged to put his full case in support of that attack at trial. If he is unsuccessful, he is barred by "cause of action" estoppel from attacking the validity of that right in subsequent proceedings -- whether on the same or different grounds. In principle, there is no reason why the same law on cause of action estoppel should not apply to trade marks as well.

* Since Hormel was attacking the validity of SPAMBUSTERS again after having unsuccessfully attacked the validity of that mark in the Registry, it was barred from so doing by cause of action estoppel.

* Hormel's claims were an abuse of process which extended to the claim for revocation as well as to the claims for a declaration of invalidity, since they should have been included in the Registry proceedings. Having failed in the Registry proceedings, it was oppressive for Hormel to raise them now.

* Hormel's SPAM mark had not become a generic name for canned meat. Since SPAM already possessed a distinctive character when the application to register it was made, Antilles' counterclaim for a declaration of revocation and invalidity failed.

The IPKat is surprised that the estoppel issue hasn't already been litigated and that the judge had to "borrow" precedents from patent and design law, given the persistence of trade mark owners in pursuing litigation. Merpel adds, if you go to the Hormel website and key 'python' into the search box, you get the message "sorry, no recipe was found".

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